parison of the claims 4, 7, 8, 9, and 10 of that application and of the five claims of the patent in suit shows that they are identical. At that time this company was the owner of both of the applications, as the assignment records of this Office show.

Thus it is sufficiently established that the application from which the allowed claims were taken was the application above referred to and that at the time of the abandonment and the grant of the patent the American Thermos Bottle Company was the owner of both inventions.

The circumstances in this case are similar to the circumstances set forth in the Commissioner's decision in the case of Metropolitan West Side Elevated Railroad Company et al. v. Siemens, (C. D., 1898, 220; 85 O. G., 290.) In that case the application papers on which the patent was granted disclosed the fact that one of the claims of the patent, infringement of which was charged, was a substitute for a claim which had been allowed in the abandoned application to which access was desired. In that case access was granted, notwithstanding the fact that petitioner did not present a certificate of the court before which the suit between the parties was pending showing that copies of such application would be relevant and material to the issues involved therein.

In my opinion the abandoned application of Reed, No. 397,553, is a part of the proceedings leading to the grant of the patent in suit and for that reason virtually part and parcel of said patent.

The petition to inspect said abandoned application and to be furnished copies thereof is therefore granted.

WILLIAMS v. FOYER AND Kurz.

Decided May 5, 1909.

142 O. G., 1114.

INTERFERENCE-PRELIMINARY STATEMENT ALLEGATIONS THEREOF MUST CONFORM TO THE RULES.

Rule 110 requires that the allegations of the preliminary statements should set forth inter alia the "date of the reduction to practice of the invention." This allegation of the reduction to practice should be alleged positively either in the terms of the rule or in such other language as will leave no question as to the actual reduction to practice of the invention.

ON PETITION.

GO-CART.

Messrs. Bradford & Hood for Williams.

MOORE, Commissioner:

This is a petition by Williams from the action of the Examiner of Interferences requiring an amended preliminary statement alleging

the date of successful use of the invention, restricting the petitioner in his proofs of reduction to practice of the invention to the date of filing of his application in the event of failure to file such an amended statement.

The party Williams in his preliminary statement, after alleging the date of conception and of making of drawings or sketches illustrating the alleged invention, states that he began work on the making of a child's full-sized carriage completely embodying said invention in a certain stated month, that he completed the same during said month, and "that the same was actually used immediately upon completion," and that he never made a model of the invention. He also alleges that he began making a large number of children's carriages embodying the invention prior to the date upon which the preliminary statement was executed.

It is contended in behalf of the petitioner that the allegation that the full-sized carriage referred to was actually used immediately upon completion is a sufficient allegation of reduction to practice of the invention and that such an actual use is necessarily a successful use, any manipulation of a device which is not successful being not a use of it, but merely an experiment with it.

Rule 110 requires that the allegations of the preliminary statements should set forth inter alia the "date of the reduction to practice of the invention." This allegation of the reduction to practice should be alleged positively either in the terms of the rule or in such other language as will leave no question as to the actual reduction to practice of the invention.

In the case of Burson v. Vogel (C. D., 1907, 669; 131 O. G., 942; 29 App. D. C., 388) the Court of Appeals of the District of Columbia said:

An experimental machine-and the first construction of a complicated device usually is may be, according to the evidence relating to its construction and use, a mere unsuccessful and, therefore, an abandoned experiment, or, though crude in its construction, may furnish a satisfactory demonstration of its utility.

The preliminary statements of an interference constitute pleadings, and according to the well-recognized practice of equity such pleadings should be positive and unmistakable in their terms. In the case of Burson v. Vogel, supra, the Court also stated:

The appellee contends that the allegation in the preliminary statement of Burson, to the effect that he constructed an experimental machine in January, 1901, does not amount to an allegation of a reduction to practice, and, hence, in respect of that machine and the two other machines thereafter constructed, to which no date is given, limits Burson to the date of his application as his first reduction to practice. We cannot concur in this view of the effect of the statement. It is not so precise as it might have been, and if exception had been taken to it on that ground, in limine, its amendment might possibly have been

compelled; at any rate, if unamended, after exception, the limitation of its averments now insisted upon might reasonably be imposed.

It is well settled that the mere construction and actual use of a machine are not necessarily a reduction to practice. As stated in the case of Sherwood v. Drewsen, (C. D., 1907, 642; 130 O. G., 657; 29 App. D. C., 161:)

Reduction to practice must produce something of practical use coupled with a knowledge, preferably by actual trial, that the thing will work practically for the intended purpose. The conception may give rational hopes of future fulfilment of the purpose at which it aims, but if as a matter of practice it falls short of success, it is not a sufficient reduction to practice. Complete invention amounts to demonstration. When, as in this case, it had not quite passed beyond experiment and had not quite attained certainty and had fallen short of demonstrating the capacity of the invention to produce the desired result, the invention itself was still inchoate. These parties sought certainty but they had not attained certainty beyond all conjecture, which certainty the law requires. (See McKenzie v. Cummings, C. D., 1904, 683; 112 O. G., 1481; 24 App. D. C., 140; Hunter v. Stikeman, C. D., 1898, 564; 85 O. G., 610; 13 App. D. C., 219; Coffin v. Ogden, 5 O. G., 270; 18 Wall., 124.)

It is obvious in view of these decisions that the requirement of the Examiner of Interferences was right and should be sustained. Counsel for petitioner stated at the hearing that efforts had been made to obtain an amended preliminary statement in accordance with the Examiner's ruling, but that the applicant had left the employ of the assignee company owning this application and had not been reached. An affidavit by counsel for the petitioner to this effect was also filed at the hearing. This affidavit should have been presented before the Examiner of Interferences, and it is not entitled to consideration when presented on appeal in the first instance.

The petition is denied.

In pursuance of the petitioner's request that if this petition be denied the time for filing the amended statement be extended it is ordered that the preliminary statements be not opened for a period of ten days, within which time the petitioner may take such action before the Examiner of Interferences as the condition of the case requires.

EX PARTE THE CRAFTSMAN'S GUILD.

Decided April 1, 1909.

143 O. G., 257.

1. TRADE-MARKS-NAME OF A COPYRIGHTABLE ARTICLE-NOT REGISTRABLE AS A TRADE-MARK.

The name given to a copyrightable article is not registrable as a trademark. (Black v. Ehrich, 44 Fed. Rep., 793.)

2. SAME NAME OF AN ARTICLE COVERED BY A DESIGN PATENT.

The name by which an article covered by a design patent is known is not registrable as a trade-mark.

ON APPEAL.

TRADE-MARK FOR IMAGES OF PLASTER-OF-PARIS, WOOD, METAL, ETC.

Messrs. Frank F. Reed and Edw. S. Rogers and Mr. Francis M. Phelps for the applicant.

MOORE, Commissioner:

This is an appeal from the action of the Examiner of Trade-Marks refusing to register the word " Billiken " as a trade-mark for images made of plaster-of-paris, images made of wood, and images made of metal.

The grounds upon which the Examiner based his action were, first, that the word is the name of a copyrighted article to wit, a statue copyrighted to The Craftsman's Guild, May 11, 1908, No. 25,523and, second, that it is the name of a patented article-to wit, a design patented to Pretz, October 6, 1908, No. 39,603-and that therefore the word is not registrable as a technical trade-mark.

That the word "Billiken " is the name of a copyrighted article appears clearly from the records of the Library of Congress, which show that on May 11, 1908, The Craftsman's Guild, of Highland Park, Ill., registered a piece of statuary under the name "Billiken," the designer being Florence Pretz. The description of the statue is given as follows:

A small figure, made in plaster-of-paris, clay, brass, bronze, copper or other material, 4 inches high, (more or less.) Figure seated with hands on hips at side, feet bare and upright, large stomach, broad grin or smile on face, tuft of hair, (red or otherwise.) The little figure is named "Billiken," familiarly known as "Billy," which title was original and coined by us. Figure is known as "The God-of-Things-as-they-Ought-to-Be," and you are invited to tickle his toes to see him smile. Figure is finished in red, ivory, brown, and other colors. Protection is sought both on the design and on the names Billiken" and "Billy."

66

It appears to be well settled that the title of a book is not a trademark. (See Hopkins on Trade-Marks, p. 163.) The reason for this holding is clearly stated by Judge Wallace in his decision in the case of Black v. Ehrich, (44 Fed. Rep., 793,) as follows:

Neither the author nor proprietor of a literary work has any property in its name. It is a term of description, which serves to identify the work; but any other person can with impunity adopt it, and apply it to any other book, or to any trade commodity, provided he does not use it as a false token, to induce the public to believe that the thing to which it is applied is the identical thing which it originally designated. If literary property could be protected upon the theory that the name by which it is christened is equivalent to a trade-mark, there would be no necessity for copyright laws.

The same reasoning would appear to be applicable to any copyrightable matter, and for this reason it must be held that the word "Billiken," which is the name of an image, is not registrable.

Furthermore, it is settled by a long line of decisions that upon the expiration of a copyright the public has a right not only to reproduce the copyrighted matter, but to apply to it the name by which it is known. For this reason, also, registration should be refused, since the Trade-Mark Act makes such registration prima facie evidence of ownership.

With respect to the second ground of the Examiner's decision, the records of the Patent Office show that on October 6, 1908, Florence Pretz took out a design patent for an image. That the image shown in this patent is the one known by the name of "Billiken " is not only a matter of common knowledge, but is evident from the description, above quoted, given in the application for copyright. This is an accurate description of the figure shown in the design patent. That the name of a patented article is not a valid trade-mark is now well settled. (Singer Mfg. Co. v. June, C. D., 1896, 687; 75 O. G., 1703; 163 U. S., 169.) The Office has repeatedly refused to register as a trade-mark the name of a patented article. See ex parte Velvril Company, Ltd., C. D., 1898; 623, 84 O. G., 807; ex parte Holophane Glass Co., C. D., 1902, 245; 100 O. G., 450.) The patents referred to in these cases were mechanical patents; but no distinction is seen between these and the case of a design patent. When the patent expires the public is entitled to make the design shown therein, and it is also entitled to call it by the name by which it has become known. As pointed out above, the name by which the image shown in the design patent is known is " Billiken," and for that reason registration should be refused, since such registration would give the registrant a prima facie title to the exclusive use of this word after the expiration of the patent.

The decision of the Examiner is affirmed.

YONKERS BREWERY v. ILer and BurgWEGER.

Decided April 7, 1909.

143 O. G., 258.

1. TRADE-MARKS—INTERFERENCE-PARTIES—APPEAL.

Where in an interference between an application and a registered mark the registrant does not appear, but others claiming as successors to the business and trade-mark rights of the registrant appear and seek to be made parties to the interference by filing a new application, which, however, the Examiner of Trade-Marks holds does not interfere with the trademark claimed by the other applicant, and the Examiner of Interferences